I pretty frequently see pretrial orders filed with a section labeled "miscellaneous issues" or "additional matters" or, someday, hopefully, "fiddle faddle."
It's a good place to put questions for the Court that might not fit anywhere else -- e.g., whether a witness may testify remotely, or if a large and unwieldy exhibit may be brought in for the jury.
Sometimes, you'll see issues that are a bit more contentious -- usually something procedural that doesn't quite rise to the level of a motion in limine. Naturally, this represents something of a procedural gray area, especially for those judges that place limits on the number of motions in limine that a party can file.
This was the case in Exela Pharma Sciences, LLC v. Eton Pharmaceuticals, Inc., C.A. No. 20-365-MN. The scheduling order there (like Judge Noreika's form order), limited each side to three motions in limine. Id., D.I. 22. Plaintiff filed the maximum number and also raised a "miscellaneous issue" "ask[ing] the Court to find that Defendant has waived any defense under 35 U.S.C. § 273 because it was not timely disclosed." Id., D.I. 181 at 19-20.
Unsurprisingly, the defendant objected to this request on procedural (as well as substantive) grounds, stating:
As presented this is an issue to exclude Eton from presenting testimony. Thus, it should have been addressed as a Motion In Limine. Since Plaintiff failed to present this as a Motion In Limine, on that basis alone Plaintiff’s request should be denied.
Id. at 20.
Judge Noreika, however, sided with plaintiff at the pretrial conference and precluded the defendant from presenting it's § 273 defense despite their protestations that the issue was "the cornerstone of Eton’s defenses from the beginning of this litigation." Id.
The order issued after the pretrial conference does not discuss the procedural issue (the transcript of the conference is not yet available -- we will update should it prove interesting), and instead addressed only the substantive preclusion issue:
Defendant did not raise the defense in any of its answers, and may not litigate a defense it raised for the first time on the eve of trial. Section 273 creates a defense to infringement for parties who commercially used the claimed invention at least one year prior to the claimed invention’s filing date or date of disclosure. Because this defense was not timely disclosed, Plaintiff was not able to take discovery on the issue. Accordingly, the Court finds that the prejudice to Plaintiff from having to litigate a claim it was not able to conduct discovery on militates in favor of barring this defense from being tried
Id., D.I. 184 at 2.
Without the transcript or significant briefing, its tough to know what lessons to take from this, but it is perhaps a sign that all is not lost when you've used up your last motion in limine.
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